DETAILED ACTION
Examiner’s Comments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Column and line (or Paragraph Number) citations have been provided as a convenience for Applicants, but the entirety of each reference should be duly considered. Any recitation of a Figure element, e.g. “Figure 1, element 1” should be construed as inherently also reciting “and relevant disclosure thereto”.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 – 17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a method of attaching and detaching 3M Scotch tape wherein the tape covers the entire surface of the porous coating layer and is left on for 5 seconds before being detached, does not reasonably provide enablement for other methods, such as the scotch tape only covering a portion of the coating surface of being left on for 3 days before being detached, etc.. I.e. see Paragraph 0130 of PGPUB:
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The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims. This rejection can be overcome by amending the claims to positively recite that the 3M Scotch tape covers the entire surface of the porous coating layer and is attached for 5 seconds before being detached.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION — The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 – 17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 1 – 17 require a specific test using 3M Scotch tape attachment and detachment, but the exact means of attachment and detachment are indefinite in the claims. Similar to the 112(a) rejection above, the specification provides specificity that the entire surface of the coating layer is covered by the 3M Scotch tape and that the tape is left on for 5 seconds before being detached. Amendment to capture this aspect of the attachment and detachment methodology is deemed sufficient to overcome this rejection.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: Other than the 112(a) and 112(b) rejections above, the prior art of record fails to teach or render obvious a separator (and method of making the same) having the claimed structure, while also meeting the limitation that the binder polymer is present in an amount of 0.5 g/m² or less in the porous polyolefin polymer substrate after the porous coating layer is peeled off by a method of attaching and detaching 3M Scotch tape three times, wherein the 3M Scotch tape covers the entire surface of the porous coating layer(s) and is left on for 5 seconds before detaching.
Several references disclose using 3M Scotch tape in various tests, but none of these references disclose the specific methodology as recited in the present specification, nor the use of this methodology to determine how much residual binder from a porous coating layer remains in the porous polyolefin polymer substrate as claimed. E.g. Pei et al. (‘320 A1) discloses a 3M Scotch tape test wherein it is the force to remove the tape that is being measured (see at least Paragraph 0106). Zheng et al. (‘366 A1), alternatively, discloses a 3M Scotch tape test to measure how well the applied to layer remains adhered to the layer beneath it (Paragraph 0045), which is opposite to the removal of the coating layer desired by the present claims (“the binder polymer is present in an amount of 0.5 g/m2 or less”). As such, the Examiner deems that the presently claimed characterization methodology results in embodiments that are neither explicitly taught, nor rendered obvious by the prior art of record as the prior art of record fails to teach with any specificity tailoring coating layers such that they meet the claimed 3M Scotch tape limitations as discussed above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN M BERNATZ whose telephone number is (571)272-1505. The examiner can normally be reached Mon-Fri (variable: ~0600 - 1500 ET).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at 571-272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN M BERNATZ/Primary Examiner, Art Unit 1785
September 16, 2026
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